WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc., v. NK Wholesaling
Case No. D2003-1052
1. The Parties
1.1 The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Venable, LLP of Washington DC, United States of America.
1.2 The Respondent is NK Wholesaling of Walkersville, Maryland, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is registered with R.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2003. On January 6, 2004, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On January 6, 2004, R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on February 18, 2004.
3.3 The Center appointed Jay Simon as the sole panelist in this matter on March 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.4 The case file was transmitted electronically to the Panel on March 22, 2004, and a hard copy was forwarded to the Panel that same day.
4. Factual Background
4.1 On July 20, 1993, Complainant registered the service mark WAL-MART with the United States Patent and Trademark Office (U.S.P.T.O.) and received registration number 1,783,039.
4.2 On September 23, 2002, Respondent registered the domain name .
4.3 Complainant is the world�s largest retailing company, with 1,568 Wal-Mart stores and 1,258 Wal-Mart super centers throughout the United States, 942 stores and 238 super centers in various countries, including countries in Latin America, Europe and Asia.
4.4 Respondent appears to be an Internet retailer selling goods similar to those sold by Complainant.
4.5 Respondent did not file a response in these proceedings and was notified of its default by the Center. Thus, the allegations and evidence contained in and attached to the Complaint are uncontested.
5. The Parties Contentions
A. Complainant
5.1 Complainant contends that the domain name is confusingly similar to Complainant�s service mark.
5.2 Complainant further contends that where the mark is famous, the likelihood of confusion is enhanced.
5.3 Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name, and has not authorized Respondent to use a domain name that is likely to be confused with Complainant�s service mark.
5.4 Complainant contends that the disputed domain name was registered and is being used by Respondent in bad faith because:
(a) Respondent, a retailer of goods similar to those sold by Complainant, was attempting to capture misdirected Wal-Mart customers, or to create a false association or affiliation with Complainant; and
b) Respondent acquired the domain name primarily for the purpose of diverting Complainant�s customers to Respondent�s website.
5.5 Complainant requests cancellation of the domain name.
B. Respondent
5.6 Respondent has failed to respond to the Complaint and is in default.
6. Discussion and Findings
6.1 The Policy, as effected by the Rules and the Supplemental Rules, provides specified remedies to trademark and service mark owners against registrants of domain names where the mark owner (Complainant) proves each of the following elements:
a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
c) the domain name has been registered and is being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph 6.1.
6.3 Respondent having failed to respond in this proceeding, is in default, and in accordance with the Rules, paragraph 14(b), "The panel shall draw such inferences...as it considers appropriate."
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.4 Complainant registered its service mark with the USPTO prior to Respondent�s registration of the disputed domain name. Also, Complainant is well known as a retailer of goods, in fact, it is the largest retailing company in the world and this panel finds it difficult to believe that Respondent was not aware of Complainant and Complainant�s activity.
6.5 The domain name includes WALMART and is, with the exception of the hyphen in the service mark, identical to the service mark. The domain name also includes the number "2". It is well settled that under the interpretation of the Policy, the inclusion of another�s service mark or trademark as part of a domain name, renders the domain name identical or confusingly similar to the service mark or trademark in which another has rights. See, for example, AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927 (October 4, 2000).
6.6 In this case, the inclusion of "2" in the domain name has the effect that the registrant is affiliated in some way with Complainant, and the pronounciation of "2" may well be "too" which further suggests that Respondent is somehow related to Complainant.
6.7 This Panel finds that the domain name is confusingly similar to Complainant�s registered service mark.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.8 Paragraph 4(c) of the Policy lists three non-exclusive methods for demonstrating rights to and legitimate interests in the domain name
(a) before any notice of the dispute, Respondent�s use or preparation to use the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods and services; or
(b) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(c) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
6.9 Complainant has not authorized Respondent to use a domain name that is confusingly similar to Complainant�s service mark, and being in default, Respondent makes no claim of license or authorization for such use.
6.10 Complainant provides unsupported allegations concerning the nature of Respondent�s website and the goods that may be offered on the website. Complainant, however, is aided by the record in this case showing Respondent�s e-mail to the Center asking for deletion of the domain name. Thus, the record in this case provides the Panel with evidence such that it may draw a reasonable inference that Respondent did not believe it had any rights or legitimate interests in the disputed domain name.
6.11 Further, there is no evidence that Respondent was ever known by the domain name; and Complainant alleges that Respondent sells goods similar to that offered by Complainant. Therefore, Respondent is not making a non-commercial use of the domain name.
6.12 Prior to notice of this dispute, Respondent did use the domain name with an offering of goods similar to that offered by Complainant. This Panel cannot find that such use was a "bona fide" use since it was a use that depended on a domain name that was confusingly similar to Complainant�s registered service mark.
6.13 This Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name. See, also, Cellular Group One v. Digital Communications, Inc., WIPO Case No. D2001-0189 (April 19, 2001).
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.14 Paragraph 4(b) of the Policy sets out four, non-exclusive indicia of bad faith. This Panel notes that a showing of bad faith, in the sense of intentional malice on Respondent�s part, is unnecessary to satisfy any of the elements of Paragraph 4(b) of the Policy. It is only necessary that Respondent�s actions be shown, again by a preponderance of the evidence, either to satisfy any of recited elements at any time prior to or during the course of these proceedings, or that Respondent�s activities on the whole, evidence bad faith regarding registration and use of the disputed domain name.
6.15 The evidence before this Panel, though meager and often consisting of unsupported allegations, is uncontested and therefore, must be accorded significant weight. Nevertheless, Respondent�s activities appear, on the whole, to be such that the domain name which is confusingly similar to Complainant�s registered mark, was registered primarily, if not only, for the purpose of intentionally attracting Internet users to a website for the sale of goods similar to those sold by Complainant. Thus, it appears that Respondent intended to create confusion as to the source of the products that it was offering on its website, or to confuse Internet users with respect to Respondent�s affiliation with, sponsorship by, or endorsement by Complainant.
6.16 Thus, the placing on a register such as the Internet of a distinctive name or a name confusingly similar to a distinctive name makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and, therefore, the owner of the goodwill in the name. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000), quoting Aldous, L. J. in British Telecommunications plc v. One in a Million (1999) FSR 1, (C.A) at page 23.
6.17 This Panel finds that Respondent has registered and used the domain name in bad faith.
7. Decision
7.1 For all of the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name be cancelled.
Jay Simon
Sole Panelist
Dated: April 5, 2004
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